Ex Parte Drew et alDownload PDFPatent Trial and Appeal BoardOct 31, 201612893795 (P.T.A.B. Oct. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/893,795 09/29/2010 Julie Ward Drew 56436 7590 11/02/2016 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 82264730 4783 EXAMINER GILKEY, CARRIE STRODER ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 11/02/2016 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): hpe.ip.mail@hpe.com mkraft@hpe.com chris.mania@hpe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JULIE WARD DREW and RUXIAN WANG Appeal2014-005296 Application 12/893,795 Technology Center 3600 Before: BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and CYNTHIA L. MURPHY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants 1 seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-20 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ). SUMMARY OF THE DECISION We AFFIRM-IN-PART. 1 The Appellants identify the real party in interest as "Hewlett-Packard Development Company" (App. Br. 2.) Appeal2014-005296 Application 12/893,795 THE INVENTION The Appellants' claimed invention is directed to utility determinations in product replacement and plan coverage (Spec., para. 9). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A computing device comprising: a processor to: receive a request to determine an expected net utility attributable to a customer based on a service plan coverage decision and a product replacement decision of the customer for a plurality of corresponding time periods, recursively determine expected net utility values for each possible coverage decision and each possible product replacement decision in each period of the plurality of time periods, wherein the expected net utility value for each coverage decision is based on an immediate utility value in a current time period and the expected net utility value of the product replacement decision from a next time period, and determine the expected net utility attributable to the customer over the plurality of time periods using a set of initial values and the determined utility values for each time period. THE REJECTIONS The following rejections are before us for review2 : 1. Claims 1-20 are rejected under 35 U.S.C. § 112, first paragraph for failure to meet the enablement requirement. 2. Claims 1-20 are rejected under 35 U.S.C. § 112, first paragraph for failure to meet the written description requirement and show possession of the invention. 2 The Answer indicates at page 13 that the rejection under 35 U.S.C. § 112, second paragraph has been withdrawn. 2 Appeal2014-005296 Application 12/893,795 3. Claims 9-15 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 4. Claims 1, 9, and 10 are rejected under 35 U.S.C. § 102(b) as anticipated by Steinberg (US 2005/0220280 Al, pub. Oct. 6, 2005). 5. Claims 2-5 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Steinberg. 6. Claims 6, 12-14, and 16-18 are rejected under 35 U.S.C. § 103(a) under Steinberg and Pierce (US 2009/0043596 Al, pub. Feb. 12, 2009). 7. Claims 7, 8, 15, 19, and 20 are rejected under 35 U.S.C. § 103(a) under Steinberg, Pierce, and Greenstein et al. (US 2006/0064304 Al, pub. Mar. 23, 2006, "Greenstein"). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 3 ANALYSIS Rejections under 35 US.C. § 112,first paragraph Enablement The PTO bears the initial burden when rejecting claims for lack of enablement. It is by now well-established law that the test for compliance with the enablement requirement in the first paragraph of 35 U.S.C. § 112 is 3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (Explaining the general evidentiary standard for proceedings before the Patent Office.). 3 Appeal2014-005296 Application 12/893,795 whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). "Enablement is not precluded by the necessity for some experimentation .... However, experimentation needed to practice the invention must not be undue experimentation. The key word is 'undue,' not 'experimentation."' In re Wands, 858 F.2d at 736-737. To evaluate whether a disclosure would require undue experimentation, the Federal Circuit has adopted the following factors to be considered: ( 1) The quantity of experimentation needed to make or use the invention based on the content of the disclosure; (2) The amount of direction or guidance presented; (3) The existence of working examples; ( 4) The nature of the invention; ( 5) The state of the prior art; ( 6) The relative skill of those in the art; (7) The level of predictability in the art; and (8) The breadth of the claims. In re Wands, 858 F.2d at 737. The Examiner's analysis must consider all the evidence related to each of these factors, and any conclusion of nonenablement must be based on the evidence as a whole. Here, that analysis in the Final Rejection (mailed Aug. 21, 2013, "Final Act.") at pages 2---6, and the Answer (mailed Jan. 31, 2014, "Ans.") at pages 2--4 has not been sufficiently performed and the rejection under enablement is not sustained. 4 Appeal2014-005296 Application 12/893,795 vVritten Description The Examiner has determined that the written description requirement is not met by the following claims: in claim 1, for the term "immediate utility value;" in claim 9 for the term "plurality of utility values;" in claims 12 and 17 for the terms "ul" and "ua0 "; and in claim 16 for the term "utility to a customer" (Final Act. 7-11; see also Ans. 6-8). In contrast, the Appellants have argued that these rejections are improper citing to portions of the Specification including paragraphs 3 7, 41, 58, 61, and 67 (App. Br. 15-17; see also Reply Br. 12-20). We agree with the Appellants. Here, proper support for the terms "immediate utility value" and "plurality of utility values" is provided for instance in the Specification at paragraph 37. Proper support for the terms ""ul" and "ua0 " is provided for instance in the Specification at paragraph 18. Proper support for the claim term "utility to a customer" is provided for instance in the Specification at paragraph 61. For these reasons, this rejection of record is not sustained. Rejections under 35 USC§ 101 The Examiner has determined that claim 9 is unpatentable under 35 U.S.C. § 101 because the claim term for a "machine-readable storage medium" is directed to transitory, non-patentable subject matter (Final Act. 10; see also Ans. 13). The Appellants argue that the claim term "machine-readable storage medium" is not directed transitory subject matter (App. Br. 19, 20). We agree with the Examiner. In the Precedential Decision ex Parte Mewherter, App. No. 2012-007692, May 5, 2013, the claim term "machine- 5 Appeal2014-005296 Application 12/893,795 readable storage medium" was determined to be directed to non-statutory subject matter in light of the Specification. Here, the Specification at paragraph 13 states that the machine readable storage medium can be "any electronic, magnetic, optical, or other physical storage device that contains or stores executable instructions." Here, the cited claim term is broad enough to include a transitory wave and this rejection of record is therefore sustained. Rejections under 35 USC§ 102(b) and 103(a) The Appellants have argued that the rejection under 35 U.S.C. § 102(b) of claim 1 is improper because the cited prior art fails to disclose: recursively determine expected net utility values for each possible coverage decision and each possible product replacement decision in each period of the plurality of time periods, wherein the expected net utility value for each coverage decision is based on an immediate utility value in a current time period and the expected net utility value of the product replacement decision from a next time period. (App. Br. 20-24; see also Reply Br. 21-24). In contrast, the Examiner has determined that the cited claim limitation above is found in Steinberg at paragraphs 14, 15, 32, 37--44, 54, and 57 (Final Act. 12; see also Ans. 14--16). We agree with the Appellants. Here, the above cited portions of Steinberg fail to disclose the argued claim limitation above. For example, while the citation to Steinberg at paragraph 37 does disclose that user information relating to products and service plans may be compared to achieve rankings, this does not specifically disclose for instance determining "net utility values for each possible coverage decision and each possible product replacement decision in each period" where the net utility value for 6 Appeal2014-005296 Application 12/893,795 1 1 • • ' '. 1 1 • 1. ' ' • 1.' 1 • ' eacn coverage aec1s10n --is oasea on an nnmemate muny vame ma current time period and the expected net utility value of the product replacement decision from a next time period." The other citations to Steinberg fail to disclose this as well. Claim 9 contains similar language to that addressed above, as well as its dependent claim 10. For these reasons, the rejections under 35 U.S.C. § 102(b) are not sustained for claims 1, 9, and 10. Turning to the rejections made under 35 U.S.C. § 103(a) for dependent claims 2-8 and 11-15, the same portions of Steinberg have been relied on to disclose the similar above cited claim limitations and the rejection of these claims is therefore not sustained (see Ans. 17-24). Claim 16 contains claim limitations similar to those addressed above. The rejection of claim 16 and its dependent claims under 35 U.S.C. § 103(a) relies on Steinberg at the same above citations to disclose those limitations (Ans. 17-24). As discussed above, these portions of Steinberg fail to disclose those similar limitations and these rejections are likewise not sustained. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting the claims under 35 U.S.C. § 112 ( enablement), 35 U.S.C. § 112 (written description), 35 U.S.C. § 102(b), and 35 U.S.C. § 103(a), as listed in the Rejection section above. We conclude that Appellants have not shown that the Examiner erred in rejecting the claims under 35 U.S.C. § 101 as listed in the Rejection section above. 7 Appeal2014-005296 Application 12/893,795 DECISION The Examiner's rejections of claims 1-20 under 35 U.S.C. §§ 102, 103, and 112 are reversed. The Examiner's rejection of claims 9-15 under 35 U.S.C. § 101 is affirmed No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 8 Copy with citationCopy as parenthetical citation